TOPIC
:Ownership

I previously blogged about my favorite copyright dispute of all time, the infamous Monkey Selfie, here and here. As a quick refresher, British photographer David Slater traveled to Indonesia to photograph macaque monkeys. He left his camera unattended on the jungle floor, where a monkey grabbed it and took a series of handsome selfies, including this one. Slater returned to the U.K., where he asserted copyright ownership in the image, including by sending a cease and desist letter to Wikimedia for including the image in its database of public domain images. Under U.S. law, only human beings can be authors of copyrightable subject matter. Accordingly, Wikimedia gave Slater the stiff-arm and refused to take the image down. Although Slater made noise about filing suit, he never did, and the controversy died down.

Enter PETA – People for the Ethical Treatment of Animals. Dubbing the monkey “Naruto,” PETA sued Slater and others, alleging that the defendants infringed Naruto’s copyright by reproducing, distributing and displaying the selfie. The defendants moved to dismiss for lack of standing under Article III and the Copyright Act. The court granted the motion, finding that Congress did not grant statutory standing to animals under the Copyright Act.

The Copyright Act does not define the terms “work of authorship” or “author.” PETA argued that anyone who creates a work of authorship – even an animal – has Copyright Act standing. Macaque monkeys, PETA reasoned, are “highly intelligent, capable of advanced reasoning and learning from experience”; have “stereoscopic color vision with depth perception”; and are “vision dominant.” The court noted, however, that the Copyright Act “makes no mention of animals anywhere,” and the Supreme Court and Ninth Circuit have referred to “persons” and “human beings” in analyzing authorship claims. Moreover, the Copyright Office will not register claims of authorship by animals. Indeed, the Compendium of U.S. Copyright Office Practices states that to “qualify as a work of ‘authorship’ a work must be created by a human being. Works that do not satisfy this requirement are not copyrightable.” Compendium 313.2 Indeed, the Compendium specifically cites as an example of uncopyrightable authorship “a photograph taken by a monkey.”

The court thus had little difficulty concluding that Naruto lacks standing to assert a claim of authorship under the Copyright Act. Naruto is not done monkeying around, however. An appeal has been filed with the Ninth Circuit, and Naruto’s opening brief is scheduled to be filed on June 28, 2016. Following the appeal is sure to be more fun than a barrel of monkeys.

Yesterday a federal judge ruled that Warner-Chappell does not own copyright in the lyrics to the song “Happy Birthday.” The lawsuit addressed only the lyrics, as the parties agreed that the music passed into the public domain long ago. The opinion is a beast, weighing in at a very dense 43 pages, and leaves the reader hanging until the very last minute.

The court addresses several issues, concluding (1) there is a genuine issue of material fact as to the authorship of the “Happy Birthday” lyrics; (2) there is a genuine issue of material fact as to whether a divestive publication of the “Happy Birthday” lyrics occurred (specifically, whether the lyrics were the subject of an authorized “general publication” under the Copyright Act of 1909 that divested the lyrics of common-law copyright protection); (3) there is a genuine issue of material fact as to whether the purported author abandoned her copyright in the lyrics; and, finally, (4) there is insufficient evidence to establish that the purported author ever transferred her rights in the lyrics to Warner-Chappell’s predecessor-in-interest.

It is important to note that, contrary to various assertions by commentators online, that the opinion does not hold that the lyrics are in the public domain. This is perhaps a wonky copyright distinction, but one that is substantively very important. The ruling holds only that Warner-Chappell does not own copyright in the lyrics. It is at least theoretically possible that some other party could come forward and establish ownership. This seems fairly unlikely, given that the song was authored in 1893 and solid evidence regarding chain of title has faded into the mists of time.

The resulting uncertainty highlights the problem of “orphan works” – works as to which it is very difficult, if not impossible, to establish ownership. The orphan works problem plagues many would-be users of works, who cannot identify or locate the owners of works they may wish to license. There have been many calls for a legislative fix of the “orphan works” problem, and we can only hope that Congress takes it up as part of the broader need for copyright reform.

I was indescribably relieved upon returning from my summer vacation to discover that we have not yet finished discussing the Monkey Selfie. No bona fide copyright lawyer could possibly want to see an end to this dispute. You can imagine my joy, then, when both the Copyright Office *and* the monkey himself (herself?) recently weighed in on the issue.

The Copyright Office issued a draft of the Compendium of Copyright Office Practices (3rd ed.) on August 19. The Compendium – a monumental undertaking – documents and explains Copyright Office practice and procedure, including with respect to registering claims to copyright. Chapter 300 addresses “Copyrightable Authorship: What Can Be Registered.” At Section 306, the Copyright Office clearly states, “The Office will not register works produced by nature, animals or plants. . . . Examples: A photograph taken by a monkey.”

Bananas! The monkey says. Perhaps counseled by the Cave Man Lawyer (h/t @boothsweet), and apparently having learned English from Cookie Monster, the monkey has his own highly entertaining views on the matter, which you can read here.

To the delight of copyright lawyers everywhere, yesterday the infamous Monkey Selfie debate of 2011 revived itself in the wake of a transparency report issued by Wikimedia revealing that the organization refused a request by photographer David Slater to remove the photo from Wikimedia Commons. Slater traveled to Indonesia in 2011 to photograph macaque monkeys. By Slater’s own account, a monkey grabbed one of his cameras and began snapping photos, including this one . Slater apparently licensed the image for distribution, and later discovered that it had been uploaded to the Wikimedia Commons database. He demanded that Wikimedia remove the image, and the organization refused on the ground that Slater did not create the image himself and therefore does not own copyright in it. Slater’s demand, and Wikimedia’s refusal, came to light when the organization issued its transparency report. Copyright Twitter feeds everywhere immediately lit up like a Christmas tree.

Under U.S. copyright law, the author of a work is the one who created it. In wonky copyright terms, it is the person who fixed an original expression in a tangible medium. Here, Slater has publicly admitted that he did not create the photograph; the monkey. The United States Copyright Office takes the position that only human beings can be “authors.” Animals need not apply. Accordingly, this gives rise to the somewhat unusual situation where there appears to be no author as a matter of law, and thus no copyright ownership.

Of course, U.S. copyright law generally does not apply extraterritorially, and the image in question was created in Indonesia. Although both countries are signatories to the Berne Convention, which requires member nations to give each others’ nationals equal treatment under copyright law, the question of who owns the copyright in the image in the first instance may be governed by Indonesian law.

Slater has reportedly consulted with a U.S. attorney, and is supposedly considering pursuing an infringement action.

The Sixth Circuit Court of Appeals recently issued an opinion which should serve as both a warning and a reminder to corporate counsel about the pitfalls of intellectual property in the context of mergers and acquisitions. In Cincom Systems, Inc. v. Novelis Corp., 581 F.3d 431 (6th Cir. 2009), a software licensee was found to have violated restrictions on the transferability of the software following a series of corporate mergers.

The licensor, Cincom, granted a nonexclusive license of its software to Alcan Rolled Products Division, an Ohio corporation. The license specifically prohibited any transfer of the rights granted under it. Alcan installed the software on a single computer in a facility it owned in New York state. Years later, Alcan created and then merged into a separate corporation known as Alcan of Texas. Following a further merger of Alcan of Texas with its subsidiaries, and a few subsequent name changes, Novelis emerged as the sole surviving corporate entity. Through all this corporate activity, Cincom’s software remained installed on the single computer located in New York state, now owned by Novelis.

Cincom sued, alleging that the various mergers had effected a transfer of its nonexclusive, nontransferable license to a separate entity in violation of the license agreement. Novelis contended that no transfer occurred because Ohio statutory merger law does not not explicitly effectuate a “transfer” of assets from a predecessor to a successor corporation, instead providing merely that the surviving entity “possesses all assets and property of the predecessor corporation.”

The Sixth Circuit rejected this restrictive interpretation, holding that “in the context of a patent or copyright license, a transfer occurs any time an entity other than the one to which the license was expressly granted gains possession of the license.” Thus, Novelis breached the license because “the only legal entity that can hold a license from Cincom is Alcan Ohio.
. . . Alcan Ohio no longer exists.”

The case should serve as a reminder to mergers and acquisitions counsel of the importance of thorough due diligence to identify any existing copyright licenses and to determine whether a particular corporate reorganization or merger might result in an unauthorized transfer. In such a case, the licensee would be well advised to seek permission from the licensor to transfer the license as part of the contemplated merger in order to avoid post-merger liability.

The case is also interesting because of the Court’s heavy reliance on patent precedent and federal common law rather than copyright law in support of its holding. The license agreement included an explicit prohibition on transfers, and it is generally agreed that under the Copyright Act, a nonexclusive license like the one at issue here is not transferable. Yet, citing a patent case, the Court relied on federal common law for the proposition that “in the context of intellectual property, a license is presumed to be non-assignable and non-transferable in the absence of express provisions to the contrary.” Though an essential element of the Court’s reasoning was that “where state law [of corporate mergers] would allow for the transfer of a license absent express authorization, state law must yield to the federal common law rule prohibiting such unauthorized transfers,” state law would similarly give way to the federal Copyright Act.

About Naomi Jane Gray

Naomi Jane Gray is a principal in the law firm Shades of Gray Law Group, P.C., where she focuses her practice on intellectual property litigation, prosecution and counseling, with a particular emphasis on copyrights and trademarks.